Rodolfo FernandezDownload PDFTrademark Trial and Appeal BoardNov 14, 2016No. 86487796 (T.T.A.B. Nov. 14, 2016) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: November 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rodolfo Fernandez _____ Serial No. 86487796 _____ Thomas D. Foster of TDFoster - Intellectual Property Law for Rodolfo Fernandez. Josette M. Beverly, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Bergsman, Wolfson and Larkin, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Rodolfo Fernandez (“Applicant”) seeks registration on the Principal Register of the mark DESERT TAN (in standard characters) for “Natural rocks and stone used for landscape decorative purposes” in International Class 19.1 1 Application Serial No. 86487796, filed December 22, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first use in commerce dates of January 26, 2004. A disclaimer to “Tan” has been entered in the application. Serial No. 86487796 2 The Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s proposed mark, when applied to Applicant’s goods, is merely descriptive thereof. After the Examining Attorney made the refusal final, Applicant timely appealed to the Board. The case is fully briefed. We affirm the refusal to register. Before we address the substantive refusal, we address an evidentiary issue. The Examining Attorney objects to Applicant’s introduction of pages from several websites submitted for the first time with Applicant’s brief. “The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.” Trademark Rule 2.142(d). In this case, Applicant has provided additional pages from websites that the Examining Attorney already made of record. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 181, 820 (Fed. Cir. 1986) (if only a portion of an article is submitted, that portion is not thereby insulated from the context whence it came); Trademark Board Manual of Procedure (“TBMP”) § 1207.01 (October 2016). We have exercised our discretion to consider the additional pages. Turning to the merits of the appeal, Applicant argues that its proposed mark is only suggestive, and not merely descriptive. More specifically, Applicant contends that a consumer would need to engage in “mature thought or follow a multi-stage reasoning process” to determine any specific attributes of Applicant’s product beyond its general “tan” coloration.2 2 Applicant concedes that “tan” is merely descriptive of the color of the landscape rocks that Applicant’s sells. Applicant’s brief, p. 13. 4 TTABVUE 14. Serial No. 86487796 3 [F]irst, a consumer must connect the term “desert” to an image of a warm and soothing landscape, and then must connect “tan” to a color. After making these respective connections, the consumer is then forced to make some sense out of the various meanings conveyed by the incongruous combination of the two terms. This need to resort to imagination renders the mark only suggestive. The Examining Attorney maintains that the proposed mark is merely descriptive of the color of Applicant’s natural rocks and stone used for landscape decorative purposes and that the “combined wording ‘desert tan’ is used to describe a variation of the color tan.”3 In support of the refusal, the Examining Attorney introduced dictionary definitions and excerpts of third-party websites as showing that the term “desert tan” is commonly used to describe the color appearance of decorative rock and stone. A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used or intended to be used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and every specific feature of the goods in order to 3 Examining Attorney’s Brief, unnumbered p. 2, 6 TTABVUE 3. Serial No. 86487796 4 be considered merely descriptive; it is enough if it describes one significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The analysis requires consideration of the possible significance that the mark would have to the average purchaser of the goods in the relevant marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002)). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a non-descriptive commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) Serial No. 86487796 5 (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents, and for tracking the status of the records by means of the Internet). See also In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing head at one end, the head being of solid uninterrupted construction without prongs”). “If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term identifies, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See Serial No. 86487796 6 also In re Shutts, 217 USPQ at 364-365; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). As a noun, the word “desert” is defined as: 1. A barren or desolate area, especially: a. A dry, often sandy region of little rainfall, extreme temperatures, and sparse vegetation. b. A region of permanent cold that is largely or entirely devoid of life. c. An apparently lifeless area of water.4 As an adjective, “desert” is defined as: 1. Of, relating to, characteristic of, or inhabiting a desert: desert fauna. 2. Barren and uninhabited; desolate: a desert island.5 One of the definitions of the term “tan” as a noun is “a light or moderate yellowish brown to brownish orange.”6 The color “tan” is listed as a color with unique “Hex” and “RGB” numbers (Hex FAA76C and RGB 250, 167, 108) on the Pantone color table presented at http://wvffl.novact.info/id40.html.7 There is no equivalent unique color tone listed on the pantone table for the color “desert tan,” although it is listed in Encycolorpedia.com as a matching paint color for “#b1a688 Hex” that is 4 At https://www.ahdictionary.com, attached to the Examining Attorney’s denial of Applicant’s request for reconsideration. Other definitions are “an empty or forsaken place; a wasteland: a cultural desert” and “a wild, uncultivated, and uninhabited region (Archaic).” These definitions are not relevant to our decision. 5 Id. 6 Other definitions are “a suntan,” “an artificially created suntan,” “tanbark,” “tannin” and “a solution derived from tannin.” These definitions are not relevant to our decision. At https://www.ahdictionary.com, attached to the Examining Attorney’s denial of Applicant’s request for reconsideration. 7 At http://www.novact.info/id40.html, attached to Office Action dated April 8, 2015. Serial No. 86487796 7 manufactured by Humbrol Paint.8 Encycolorpedia.com also lists the color “desert” under #c19a6b.9 The Examining Attorney introduced excerpts of several third-party websites to show that others in the decorative stone industry commonly use the words “desert tan” to describe the color feature of ornamental stone and rocks. For example: 1. Jody’s Trucking, at jodystrucking.com, advertises a delivery service including “desert tan” decorative rocks.10 2. Desert Rock Co. Landscape Center, at desertrockco.com, offers “Colored Gravel,” including the following stone mix identified as “Desert Tan.”11 3. A. Montaño & Associates, at montanosandandgravel.com, offers a decorative stone labeled “3/4” Desert Tan.”12 8 At http://encycolorpedia.com/b1a688, attached to Office Action dated April 8, 2015. 9 Id. 10 http://www.jodystrucking.com/landscape-rock-gallery/, attached to Office Action dated April 4, 2015. 11 At http://www.desertrockco.com/product1/, attached to Final Office Action dated November 8, 2015. 12 At http://www.montanosandandgravel.com/decorative-landscaping-rock-santa-fe-nm/, attached to Final Office Action dated November 4, 2015. Serial No. 86487796 8 4. Stone Gallery Landscape & Masonry Supplies, at https://www.outdoorstonegallery.com, offers “Desert Tan Brownstone,” advertising a “natural stone [that] has warm brown colors with light swirls from its natural sedimentary layers. Its earthy tone makes it a popular choice….”13 14 5. Cascade Paving Hardscape Stones LLC, at http://www.cascadepavingstone.com, offers “Holland Stone” in four colors, one of which is “Desert Tan.”15 13 At https:/www.outdoorstonegallery.com/desert-tan-brownstone.html, attached to denial of Applicant’s request for reconsideration. 14 Applicant contends that the pillar caps shown here are not comparable to its natural rocks and stone because the third party’s product is a “custom fabricated architectural stone feature” and not a natural rock or stone product for landscape decorative purposes. Applicant’s Brief, p. 7, 4 TTABVUE 8. We find the goods related because both products are designed for use in outdoors landscaping projects. Even without this reference, we would find that the proposed mark is merely descriptive. 15 At http://www.cascadepavinqstone.com/oreqon-landscaping-stone-materials.php, attached to Final Action dated November 4, 2015. Serial No. 86487796 9 6. BuildDirect, at http://www.builddirect.com, offers building materials, one of which is advertised as “Black Bear Pallets Manufactured Stone – Stack-N- Tack.” The product is labeled “Desert Tan/ Stacked Stone 6 Sq. ft. Flat.”16 7. Anchor Block Company, at http://www.anchorblock.com, offers Windsor Stone® retaining wall systems in a “premium color palette” option and a “solid color palette” option. Examples of the solid color palette stone include “Desert Tan.”17 18 8. Kiel Sand & Gravel, at http://www.kielsandandgravel.com, offers a “light tan fractured stone available in ¾” and 1 ½” that it identifies as “Desert Tan.”19 16 At http://www.builddirect.com/Manufactured-Stone-Veneer/Desert-Tan/ProductDisplay, attached to Final Action dated November 4, 2015. 17 At http://www.anchorblock.com/products/walls/windsor-stone-retaining-wall/, attached to Final Action dated November 4, 2015. 18 Applicant argues that this product is unrelated to its natural rocks and stone. However, both products may be used in landscaping projects, and therefore the website evidence is relevant to our decision. We hasten to add that even without this reference, the evidence would still compel a finding that the proposed mark is merely descriptive. 19 At http://www.kielsandandgravel.com/landscape products.htm, attached to the March 10, 2016 denial of Applicant’s request for reconsideration. Serial No. 86487796 10 9. Kafka Granite LLC, at http://www.kafkagranite.com, offers decomposed granite standard pathway mix in a variety of colors, including “Desert Tan Marble.”20 10. Masonry Club, at http://www.masonryclub.com offers boulders under the tag “landscape supplies.” There are several illustrations of different types, all categorized as “Desert Tan Cobbles.”21 Applicant argues that the Examining Attorney has erred in relying upon the third-party websites. “In actuality [the third-party websites] show that the term DESERT TAN is but one of a number of trademarks used by these rock and stone 20 At http:/www.kafkaqranite.com/pathway-materials/standard-pathway-mix-2/, attached to the March 10, 2016 denial of Applicant’s request for reconsideration. 21 At http://www.masonryclub.com/landscape-supplies-boulders.html, attached to the March 10, 2016 denial of Applicant’s request for reconsideration. Serial No. 86487796 11 suppliers.”22 Applicant contends that his competitors identify each separately colored product in its product line by way of a trademark, and that he is “the first user of the ‘desert tan’ mark in connection with landscape materials.”23 Upon receiving a registration, he “would, of course, be able to take appropriate action to deal with these junior trademark uses of the DESERT TAN mark by competitors.” This argument is unpersuasive. The fact that Applicant’s competitors appear to use many different names for their landscape products in addition to “desert tan” does not mean that it or any of these terms are proprietary names and not mere color descriptors. For example, Applicant supplemented the pages from the website of A. Montaño & Associates with a page about the company’s “Decorative Rock Santa Fe” product that contains a chart of its somewhat lengthy product list. The first portion of the chart is reproduced below:24 22 Applicant’s brief, p. 5, 4 TTABVUE 6. 23 Applicant’s reply brief, p. 2, 7 TTABVUE 3. 24 At http://www.montanosandandgravel.com/decorative-landscaping-rock-san.., attached to Applicant’s Brief. Serial No. 86487796 12 Along with other terms, “Desert Tan” appears in this chart. Applicant contends these terms are all trademarks. However, in promoting the product, the chart uses the heading “Decorative Gravel Colors” to identify the listed items, and the text immediately preceding the chart includes reference to the color of the rock: “The large selection of different types and colors of decorative rock offered … makes every landscaping project a breeze.”25 This evidence tends to support, rather than refute, our finding that the proposed mark is merely descriptive of the color of Applicant’s natural rocks and stone. Even if it did not, we must decide the case before us on the basis of what the evidence shows concerning the mark Applicant seeks to register, not on the basis of whether other words or terms may qualify for registration. Moreover, the fact that Applicant may be the first, or even only, user of a merely descriptive designation does not justify registration if the only significance conveyed 25 Id. Serial No. 86487796 13 by the term is merely descriptive. See In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012). Applicant also asserts that even if third parties are using the term “desert tan” descriptively, that because some of them are using the term to describe a landscape product that appears reddish, while others use the term to describe a yellowish “or even tan” colored stone product, the term “desert tan” does not describe a single, uniform color, and thus consumers are unable to “immediately identify with any specificity to what color DESERT TAN refers.”26 While the third-party websites use the term “desert tan” to identify a mix of stones or rocks having a general tan appearance with nuances in the color schemes selected, the overall look of the goods in each instance is that of rocks and stones that are tan in color and resemble the color of desert sand. Just as the term “tan” designates a spectrum of colors ranging from light or moderate-yellowish brown to brownish orange, the term “desert tan” can, without losing its descriptive connotations, denote a range of colors reminiscent of the tan colors of the desert. In any event, the fact that third parties employ a range of color shadings for “desert tan” does not mean the term fails to describe to consumers the color of Applicant’s goods. As stated earlier in this opinion, the descriptiveness of a term is not decided in the abstract, but rather is decided in relationship to the goods for which registration is sought. Abcor Dev. Co., 200 USPQ at 218. Here, Applicant has submitted as a specimen of use of his mark, a photograph 26 Applicant’s Brief, p. 13, 4 TTABVUE 14. Serial No. 86487796 14 of a bag of landscaping rock, wherein the rock is shown to be of a tan coloration and the words “Desert Tan” appear across the front of the bag: Just as the third-party websites show that decorative rocks and stone commonly are sold in a variety of color combinations, such as brown, charcoal, gray and tan, and that the term “desert tan” is used in a similar fashion to describe the color of the product, Applicant also uses his proposed mark as part of a series, to describe the color scheme of his line of products of colored landscaping rock. The line of products is identified by the color descriptors “Desert Tan,” “Crystal White,” “Mesa Red” and “Rustic Red.”27 Photographs of these products were placed in the record, and illustrate how “Desert Tan” fits into this pattern: 27 Attached to Applicant’s Response of October 8, 2015. Serial No. 86487796 15 When the terms “desert” and “tan” are combined, “the mark as a whole, i.e., the combination of the individual parts,” does not convey “any distinctive source- identifying impression contrary to the descriptiveness of the individual parts.” In re Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a prospective purchaser or user” of Applicant’s goods, “because … the combination of the terms does not result in a composite that alters the meaning of [any] of the elements … refusal on the ground of descriptiveness is appropriate.” In re Petroglyph Games, 91 USPQ2d at 1341. Based on the commonly understood meanings of the words “desert” and “tan,” together with the third-party evidence and Applicant’s own use, we conclude that consumers familiar with Applicant’s natural rocks and stone used for landscape decorative purposes would immediately understand, upon seeing Applicant’s proposed mark, that the goods are natural rocks and stone that are available in warm, brownish colors ranging from lighter to darker tones. Consumers will understand “desert tan” to indicate a color within this range of colors, just as they understand “tan” to indicate a color ranging from yellowish brown to brownish Serial No. 86487796 16 orange. No imagination or thought is required by a prospective purchaser to discern that a significant characteristic or feature of Applicant’s rocks and stone is that they are available in such color. There is nothing incongruous about the proposed mark; rather, the mark as a whole immediately describes a quality, characteristic, or feature of the goods. See. e.g., Genesee Brewing Co. v. Stroh Brewing Co., 43 USPQ2d 1734, 1743 (2d Cir. 1997) (HONEY BROWN is descriptive of beer that “is sweet, flavored with honey, and deep brown in color”); Ferro Corporation v. SCM Corporation, 219 USPQ 346 (TTAB 1983) (TITANIUM YELLOW is generic for “a calcinated yellow pigment”); In re SCM Corporation, 206 USPQ 538 (TTAB 1979) (TITANIUM YELLOW is merely descriptive for calcine yellow pigment; affidavit in support of Section 2(f) showing insufficient). Accordingly, we find that the proposed mark DESERT TAN is merely descriptive of Applicant’s “natural rocks and stone used for landscape decorative purposes.” Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation